At
Wilmington this 11th day of May,
2018, having reviewed the proposed pretrial order
and exhibits to it (D.I. 715) (“PTO”), IT
IS HEREBY ORDERED that:

1. Plaintiffs' - Integra LifeSciences Corp., Integra
LifeSciences Sales LLC, Confluent Surgical, Inc., and Incept
LLC (“Plaintiffs” or “Integra”) -
motion in limine (“MIL”) No. 1, to preclude
Defendant HyperBranch Medical Technology, Inc.
(“Defendant” or “HyperBranch”) from
offering evidence and argument regarding non-infringement or
invalidity defenses not specifically identified previously is
DENIED. The only specific concern Plaintiffs raise is with
respect to the Jacobs reference, but the Court has already
held that Defendant will be permitted to present evidence and
argument related to Jacobs. (See D.I. 601) (denying
Integra's motion to strike (D.I. 510); see also
D.I. 714) The Court and the parties agree to the general
principle that neither side will be permitted to present at
trial evidence or argument that has not been timely and
properly disclosed. To the extent either side believes the
other is violating this principle (no such violation is
identified in Plaintiffs' MIL No. 1), it may seek
appropriate relief from the Court at trial.

2. Plaintiffs' MIL No. 2, to exclude evidence and
argument inconsistent with the Court's claim
construction, will be discussed at the pretrial conference
(“PTC”), to be held on May 15, 2018. In part,
Plaintiffs' MIL No. 2 overlaps with issues also pending
before the Court in connection with: (i) Defendants'
objections (D.I. 698) to the grant (D.I. 672) of
Plaintiffs' motion (D.I. 396) to exclude certain opinion
testimony and evidence, and (ii) Defendant's MIL No. 1,
all of which the parties shall also be prepared to discuss at
the PTC. The Court and the parties agree to the general
principle that neither side will be permitted to present at
trial evidence or argument that is inconsistent with the
Court's claim construction.[1]

3. Plaintiffs' MIL No. 3, to exclude evidence and
arguments relating to the Court's pre-trial rulings, is
GRANTED. The Court agrees with Plaintiffs that informing the
jury of what the Court has ruled prior to trial (other than
providing the jury the Court's claim constructions, but
not the Court's claim construction opinion or reasoning)
would be unfairly prejudicial, confusing, and waste time
(given the context that would need to be given to the jury).
See generally Nipper v. Snipes, 7 F.3d 415, 418 (4th
Cir. 1993) (warning of danger of jury giving undue weight to
findings made by judge). The limited, if any, probative value
of informing the jury of the Court's rulings on disputes
the parties have previously presented is substantially
outweighed by these concerns. See Fed. R. Evid. 403.
The Court's decision does not preclude either side from
cross-examining a witness based on her prior inconsistent
statement(s). Nor does the Court's decision today
unfairly prejudice Defendant, as the Court will not be
permitting any expert to testify in a manner inconsistent
with the Court's claim construction (rendering it
unnecessary to attempt to persuade the jury that an opinion
the Court will permit the jury to hear is somehow
inconsistent with the Court's claim construction). The
Court's ruling extends to all evidence relating to the
PTAB and the IPR, including the PTAB's claim
construction, its impact on the Court's claim
construction, and the outcome of the IPR. Although relevant
(for example, to Defendant's defense to willful
infringement), the prejudice and confusion inherent in
presenting this evidence to the jury - particularly given the
PTAB's different standards - substantially outweighs its
probative value. See id.

5. Defendant's MIL No. 2, to exclude expert testimony
that is outside the scope of an expert's report(s), is
GRANTED IN PART and DENIED IN PART. The motion is GRANTED
with respect to any opinion by Plaintiffs' expert Jarosz
with respect to damages based on conduct within the United
States, as Plaintiffs have not disputed Defendant's
contention that Jarosz previously disclosed an opinion only
with respect to damages based on conduct outside the United
States. The motion is GRANTED with respect to Distefano, who
only provided opinions with respect to the '5705 patent,
which is no longer at issue. (See, e.g., D.I. 529;
see also D.I. 508 (granting summary judgment of
non-infringement of “esters” claims of '5705
patent); D.I. 679) Plaintiffs do not contend that
Distefano's testimony is relevant to any issue that will
be the subject of the trial. The motion is DENIED in all
other respects, including with respect to witnesses Rivet and
Mays, as to whom Defendant has not articulated a specific
objection. The parties and the Court agree to the general
principle that no expert will be permitted to testify to
opinions that have not been properly and previously
disclosed. As the parties have requested (see PTO at
15), the Court will rule at trial on objections that an
expert is violating this general principle.

6. Defendant's MIL No. 3, to preclude fact witnesses from
providing expert testimony, is DENIED, as Defendant has not
persuaded the Court that Plaintiffs intend to run afoul of
the general principle that a fact witness may not offer
expert testimony. For example, Plaintiffs' Dr. Sawhney,
an inventor on a patent-in-suit, will be permitted to provide
factual testimony about his patent, including its importance
to him, about what he knew about the prior art and that he
tried to do something different, and about Plaintiffs'
DuraSeal product, which he developed and for which he wanted
to obtain a patent. He will not, however, be permitted to
opine as to whether Plaintiffs' or Defendants'
products are within the scope of the claims as construed by
the Court. Should either party believe the other side is
seeking to elicit expert testimony from a fact witness, that
party may, at trial, seek appropriate relief.

Having
identified additional disputes in the PTO, IT IS
FURTHER ORDERED that:

1. The
parties' proposal to present unresolved objections to
deposition designations to the Court “no later than
midnight two (2) calendar days before the witness is to be
called at trial” is REJECTED. Such objections must be
presented to the Court no later than 9:00 p.m. two calendar
days before the witness is to be called at trial. The parties
may revise the deposition deadlines they have agreed to
impose on themselves (see PTO at 13-14) in order to
meet the Court's deadline.

2. When
a witness is called to testify by deposition at trial, the
party calling the witness shall provide the Court with three
copies of the transcript (one each for the Judge, Law Clerk,
and Court Reporter) of the designations and
counterdesignations that will be read or played.
(See PTO at 14-15)

3. The
Court ADOPTS Plaintiffs' proposal that exhibits not
listed in the PTO may not be admitted at trial unless good
cause is shown. (See PTO at 16)

4. The
Court ADOPTS Plaintiffs' proposal that no exhibit will be
admitted unless offered into evidence through a witness, who
must at least be shown the exhibit. (See PTO at 16)

5. The
Court ADOPTS Plaintiffs' proposal that the evidence
admitted shall be limited to the actual evidence ...

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